Long awaited decision of the CJEU is a step in the right direction for Louboutin red soles

On 12 June 2018 the Court of Justice of the European Union (CJEU) issued its decision in Case C-163/16 Christian Louboutin v Van Haren Schoenen BV, ruling that a mark consisting of a colour applied to the sole of a high-heeled shoe, is not covered by the prohibition of the registration of shapes. The mark does not consist ‘exclusively of the shape’.

Over 5 years ago, Christian Louboutin registered a trademark in Benelux for ‘footwear’ and ‘high-heeled shoes’ which is described as consisting “of the colour red (Pantone 18 1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark)”. Shortly after registration, Louboutin initiated a claim for trademark infringement against Van Haren, a company selling women’s shoes with similar red soles in the Netherlands. In response to such claim, Van Haren alleged that Louboutin’s trademark was invalid as it fell into one of the grounds in which registration of a trademark might be refused or declared invalid under the EU Trademark directive, particularly that the sign consisted exclusively of a shape that gives substantial value to the goods. After hearing such claim, the Netherlands court referred a question to the CJEU, asking whether the concept of ‘shape’, within the meaning of the directive, is “limited to the three-dimensional properties of the goods, such as its contours, measurements and volume […], or does it include other (non-three-dimensional) properties of the goods, such as their colour?”.

Following an opinion of Advocate General Szpunar (AG Szpunar) in 28 February 2017, the question was transferred to the Grand Chamber in September 2017, and subsequently AG Szpunar gave a second opinion in February 2018 following the reopening of the oral procedure and a further hearing. In this second opinion, AG Szpunar opined that a mark combining colour and shape may be refused or declared invalid under the directive, adding that the analysis must relate exclusively to the intrinsic value of the shape and take no account of attractiveness of the goods flowing from the reputation of the mark or its proprietor. This view, although not binding on the CJEU, led to a number of misleading and negative media reports suggesting that Louboutin was going to lose its trademark protection. Louboutin responded by taking the rare step of commenting on a not yet final legal matter and arguing that the opinion “supports trademark protection for our famous red sole, rather than threatening it.”

In its very short and concise decision, the CJEU, acknowledging that the directive provides no definition of ‘shape’, focussed instead on its meaning in everyday language, such that a colour per se, without an outline may not constitute a shape. Further, they took the view that a mark cannot be a shape “in the case where the registration of the mark did not seek to protect that shape but sought solely to protect the application of a colour to a specific part of that product.”

Given the negative media attention bought about by the earlier opinion of AG Szpunar, Louboutin were quick to welcome the CJEU’s decision with a statement proclaiming that “the protection of Christian Louboutin’s red sole trademark is strengthened by the European Court of Justice” and suggesting that “the red colour applied on the sole of a woman’s high heel shoe is a position mark, as Maison Christian Louboutin has maintained for many years.”

Whilst the decision is a step in the right direction for Louboutin, the outcome is yet to be finalised with the ultimate decision as to whether the trademark is or is not invalid now being passed back to the hands of the court in the Netherlands.